By
Donald Zuhn —

The
Federal Circuit today vacated-in-part and affirmed-in-part an order by the
District Court for the District of New Jersey granting summary judgment of
invalidity of U.S. Reissued Patent No. 39,221
based on anticipation and obviousness.

Plaintiff-Appellant
Ortho-McNeil Pharmaceutical, Inc. owns the '221 patent, which relates to a
tramadol and acetaminophen composition for use in prescription pain relief.  Ortho first claimed this composition in
U.S. Patent No. 5,336,691,
and after receiving FDA approval, began marketing a tramadol/acetaminophen
tablet under the brand name Ultracet®.

Seeking
approval to market a generic version of Ortho's tramadol/acetaminophen tablet,
a number of generic companies filed Abbreviated New Drug Applications (ANDAs)
with the FDA.  In response to these
ANDA filings, Ortho filed multiple lawsuits for infringement of the '691
patent.  The generic companies
argued that the '691 patent was invalid for anticipation and obviousness in
view of U.S. Patent No. 3,652,589,
which relates to tramadol, and which discloses a tramadol, p-acetamino-phenol,
pentobarbital sodium, and ethoxy benzamide composition.  During the course of this litigation,
Ortho learned that p-acetamino-phenol was an archaic name for acetaminophen.  Because the '589 patent discloses a
1:10 ratio of tramadol to p-acetamino-phenol (i.e., acetaminophen) in its four-compound composition, and this
ratio falls within the scope of several claims in the '691 patent, Ortho sought
to reissue the '691 patent.

During
reissue proceedings, Ortho redrafted all but one of the asserted claims of the
'691 patent to narrow them, and amended the lone remaining claim to independent
form.  The redrafted claims and
amended claim (claim 6 of the '221 patent) were allowed to reissue.  Following reissue, Ortho amended its
complaints against the generic companies to assert the reissue claims.  Ortho's cases against Defendants-Appellees
Teva Pharmaceuticals Industries, Ltd., Teva Pharmaceuticals USA, Inc., Watson
Laboratories, Inc. ("Teva"), and Caraco Pharmaceutical Laboratories,
Ltd. ("Caraco") were then consolidated.

Teva
and Caraco filed summary judgment motions of invalidity, asserting that the
'221 patent was anticipated and rendered obvious by the '589 patent and a
series of German publications that were cited during the reissue proceedings
(and which disclose a method of managing cancer pain by customizing a
co-administration of pain relievers and dosing regimens for particular
patients).  Ortho disputed Teva's
and Caraco's interpretations of the references and submitted expert testimony
explaining why the references did not anticipate or render obvious the asserted
claims.  The District Court,
however, granted summary judgment invalidating claim 6 as anticipated and obvious
over the prior art, and invalidating the other asserted claims as obvious over the prior art.

In
vacating the District Court's summary judgment invalidating the asserted claims
other than claim 6, the Federal Circuit determined that these claims recite a
pharmaceutical composition of tramadol and acetaminophen in a ratio of about
1:5 to about 1:19, and that "[a] single tablet containing only tramadol
and acetaminophen in a fixed dose ratio within the claimed range is not
disclosed in the cited prior art." 
The majority also determined that the '589 patent discloses a
four-compound composition and "does
not suggest that the pentobarbital sodium and ethoxy benzamide are merely
optional for the combination to work as desired."  The Court also took note of Ortho's
expert testimony that "one of ordinary skill in the art would not find it
obvious to try to remove two of the four active ingredients disclosed in [the
four-compound composition of the '589 patent] to arrive at the claimed
composition."  As for the
series of German references, the majority noted that Ortho's expert explained
that these references "actually teach away from the claimed composition
because they emphasize the importance of flexibility in choosing combinations
and doses of medications based on individual needs," and also disparage the
claimed fixed-dosage combination tablet. 
The majority concluded that Ortho's reading of the prior art, and expert
testimony regarding the understanding of one skilled in the art, raised
material questions of fact as to whether a skilled artisan would have found the
claimed tramadol/acetaminophen composition obvious, and therefore vacated the
District Court's grant of summary judgment as to the asserted claims other than
claim 6.

Claim
6 of the '221 patent recites a pharmaceutical composition comprising a tramadol
material and acetaminophen, wherein the ratio of the tramadol material to
acetaminophen is a weight ratio of about 1:5.  With respect to this claim, the Federal Circuit first
determined that while the '589 patent discloses a composition comprising tramadol
and acetaminophen, the parties were at odds as to whether the '589 patent
discloses the recited weight ratio. 
Stating that "[t]he district court improperly resolved disputed
questions of fact" in agreeing with Teva's and Caraco's interpretation of
the '589 patent, the majority vacated the District Court's summary judgment
that claim 6 is invalid for anticipation.

The
majority, however, affirmed as to the District Court's summary judgment that
claim 6 is invalid as obvious.  The
Federal Circuit stated that the ratio of tramadol and acetaminophen disclosed
for the four-compound composition of the '589 patent (i.e., 1:10) is so close to the Court's prior construction of
"about 1:5" (see Patent Docs
report on the prior appeal)
that the '589 patent "creates a prima facie case of obviousness with
regard to claim 6."  The
majority concluded that Ortho failed to rebut the prima facie case by "show[ing]
that the prior art teaches away from the claimed range, or the claimed range
produces new and unexpected results over the prior art range."

Judge
Mayer, in his dissent, begins by declaring that:

The
claimed invention does nothing more than combine two well-known pain relievers
— acetaminophen and tramadol — in a single tablet.  Since the prior art clearly and unequivocally taught that
these two analgesics could be combined for effective pain relief, the claimed
invention is the epitome of obviousness.

With
respect to the disclosure of a four-compound composition in the '589 patent,
Judge Mayer states that:

The only alleged difference between the tablet disclosed in the asserted claims of
the RE221 patent and the tablet disclosed in [the '589 patent] is that the
latter also contains two additional ingredients, pentobarbital sodium and
ethoxy benzamide.  Given that
ethoxy benzamide was a known carcinogen and pentobarbital sodium was known to
have antagonistic interactions with analgesics, it would have been obvious to
remove these two drugs from [the '589 patent's] formulation.

Observing
that "[n]owhere does [the '589 patent] state that pentobarbital sodium and
ethoxy benzamide are required components in a tramadol/acetaminophen
tablet," Judge Mayer concludes that the removal of these two compounds
would have been "a predictable and simple variation" on the formulation
disclosed in the '589 patent.  Moreover,
in Judge Mayer's view, when the German publications (which disclose combining
tramadol with acetominophen to provide pain relief) are read in the light of
the '589 patent (which discloses a fixed-dose tablet), "they clearly
suggest combining tramadol and acetaminophen in a single fixed-dose tablet."  Thus, in Judge Mayer's eyes "there
is nothing even arguably new about what Ortho claims to have invented."

Ortho-McNeil Pharmaceutical, Inc. v. Teva Pharmaceuticals Industries, Ltd. (Fed. Cir. 2009)
Nonprecedential
disposition
Panel:
Circuit Judges Mayer, Prost, and Moore
Opinion
by Circuit Judge Prost; dissenting opinion by Circuit Judge Mayer